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Friday, 30 April 2010

According to this news item, which is in the process of being picked up elsewhere, a Brazilian Court has decided that, contrary to all conventional wisdom, a patent claiming priority to an earlier application expires 20 years counted from the priority date and not from the date of filing the application. If confirmed, this would be a very surprising development that would presumably affect the lifetime of all priority-claiming Brazilian patents. [UPDATE: See comments below - this case is an unusual one, and the usual rules about priority may not in fact be the issue. There is more information about this issue on IP Tango here, here and here]

The patent itself, which the IPKat presumes is BR9102560, was filed on 19 June 1991 claiming priority to GB9013750.6, filed on 20 June 1990. As far as the IPKat understands, according to Brazilian patent law this means that the patent will expire by 19 June 2011, 20 years from the filing date. However, the Brazilian court has apparently come to a different conclusion and figures that the patent will have expired by 20 June 2010 instead, calculating the 20 year term from the earlier GB priority date instead.

The fact that the patent relates to a pill that tends to be most used by men of a certain age, and which retails for surprisingly large amounts of money in Brazil will, the IPKat thinks, have had no bearing at all on this decision.

This isn't just contrary to all conventional wisdom: Art. 4bis of the Paris Convention provides that patents applied for the same invention in different countries are independent of one another.

At paragraph (2), it is specifically indicated that the duration of patents applied for during the period of priority are independent as to their normal duration; and at (5): "patents obtained with the benefit of priority shall, in the various countries of the [Paris] Union, have a duration equal to that which the would have, had they been applied for or granted without the benefit of priority".

The issue at bar in the Brazilian Superior Court of Justice had nothing to do with priority, but rather with the manner of counting the term of protection of pipeline patents. Under the Brazilian statute of 1996, pipeline patents are based on foreign patents and their term is counted from the original foreign patent application. The issue was whether one could consider the date of filing of a foreign application, filed subsequently to the abandonment of the first application abroad, to be the triggering date of the term of protection of the Brazilian pipeline patent, or instead the Patent Office (INPI) should consider the date of the initial filing. The Court (very correctly in my view) understood that, due to the exceptional nature of the pipeline regime, the provisions concerning it should be applied literally, which means that they should not deserve extensive protection. Therefore, the court held that the triggering date for starting counting the 20-year term was the very first filing date, not subsequent ones. So, there is nothing here against conventional wisdom (or against Article 4(B)(4) of the Paris Convention). What is against conventional wisdom was the very adoption of the pipeline regime. Only two or three countries around the world actually have accepted it.

Nuno, do you know if this is really about BR9102560 to which David has linked? That application seems to have been published on 21/02/92, while I understand from your post and Patricia's links that the Court's decision was on a patent application that was filed retroactively in 1996 or so.

Wasn't Pfizer lucky for not having the patent invalidated? They now effectively get a second redating that saves the patent from invalidity.

I had never heard of pipeline patents before, and I can't say I like the idea...

As it happens, I am chairing a session at the PIUG annual meeting in Baltimore today, and one of my speakers is from INPI. An early sight of her presentation materials suggests an alternative possible explanation.

Brazil was allowed to implement a pipeline protection system in the years immediately following WTO entry. Once the new law was fully implemented on 14 May 1997 the pipeline closed.

Article 230 of the new law required 'pipeline' applicants to indicate, in their filing petition, the date of the first application made (i.e. the priority date claimed for the Brazilian application), with the further condition that the corresponding foreign application would have to issue as a patent. In the absence of the corresponding foreign patent, no patent rights would be granted in Brazil. The patent eventually granted in Brazilwould be assured a term equal to (but not longer than) the remaining term of protection granted in the country where the application was first filed.

If the application referred to in this suit falls under the transitional provisions of this part of the Act, it is feasible that the court could have held that the Brazilian patent must expire on the same date as the British patent from which it claims priority.

This comment is subject to verification by my speaker, who is currently stranded somewhere between Sao Paulo, Chicago or Baltimore. If I discover more, I will attempt to post an update.

My correspondence with my contact at INPI suggests that this Brazilian patent is indeed a pipeline patent, and hence subject to the transitional arrangements of Article 230 of Law 9729 of 1996. There is therefore no suggestion that the court's decision will affect all Brazilian patents. Although the original Brazilian application was BR PI 9102560-5 filed in 1991, claiming GB priority 9013750.6, this case was abandoned and a pipeline application, number BR PI 1100028-7 deposited on 9 Aug 1996, cross-referring to both the earlier BR application and the GB case. Being a pipeline patent application, once granted, it was subject to s.4 of Article 230, which reads:"§ 4 - A patent granted on the basis of this article will be guaranteed the remainder of the term of protection in the country where the first application was filed, counted from the date of filing in Brazil and limited to the term defined in article 40, the provisions of the sole paragraph thereof not being applicable."

As a consequence, the term of the granted Brazilian pipeline patent would be such that it expired at the same time as the GB case i.e. 20 June 2010, provided that the GB case was in fact granted. Article 230 required pipeline applicants to indicate, in their filing petition, the date of the first application made with the further condition that the corresponding foreign application would have to issue as a patent. The original Pfizer application was used as a priority to file at the EPO, and then abandoned - no national GB case was granted, only EP 463756-B1 designating the UK. I'm speculating that the patent holder is claiming that the appropriate term of protection in the UK, and hence the term of the Brazilian patent, should be that of the EP-B which will expire on 7 June 2011. The Brazilian courts are saying that the term of the Brazilian case cannot exceed the anticipated term of the GB priority filing, irrespective of the fact that it did not grant directly.

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